WILMap: European Union

LEGISLATION

Directive 2004/48/EC on the Enforcement of Intellectual Property Rights
 
[Article 11 states that "Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC."]
 
Directive 2001/29/EC on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society
 
[Article 8(3) provides that “Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.” ]
 
Directive 2000/31/EC on Certain Legal Aspects of Information Society Services, in particular Electronic Commerce, in the Internal Market 
 
[(1) Articles from 12 to 15 provides mere conduit, caching, and hosting exemptions for intermediaries, together with the exclusion of a general obligation on access, hosting and caching providers, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.
 
(2) In particular, Article 14(1) provides that Member States shall ensure that hosting providers are not liable for the information stored at the request of the recipient, on condition that: (a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or (b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.
 
(3) Article 14(3) also states that the liability exemption for hosting providers provided in Article 14(1) "shall not affect the possibility for a court or administrative authority, in accordance with Member States’ legal systems, of requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility for Member States of establishing procedures governing the removal or disabling of access to information.]
 
Directive 95/46/EC on the Protection of Individuals with Regard to the Processing of Personal Data and on the Free Movement of Such Data
 
[Inter alia, Article 23, titled "Liability," provides that "1. Member States shall provide that any person who has suffered damage as a result of an unlawful processing operation or of any act incompatible with the national provisions adopted pursuant to this Directive is entitled to receive compensation from the controller for the damage suffered. 2. The controller may be exempted from this liability, in whole or in part, if he proves that he is not responsible for the event giving rise to the damage."]

OTHER DOCUMENTS AND PENDING PROPOSALS 

 
[providing information on the first result of implementation of the Code of Conduct and urging platforms to do more to implement the code of conduct]
 
European Commission, Proposal for a Directive on Copyright in the Digital Single Market, COM(2016) 593 final, September 14, 2016
 
[The draft directive aims—inter alia—to close the so called “value gap” between Internet platforms and copyright holders.  To that end, the proposed reform includes a provision that would impact platform operations. It requires intermediaries “that store and provide access to large amounts of works [. . .] uploaded by their users” to take appropriate and proportionate “measures to ensure the functioning of agreements concluded with rightholders for the use of their works” or “to prevent the availability on their services of [such] works,” including through “the use of effective content identification technologies.”]
 
 
[Released in parallel with the Copyright in the Digital Single Market Directive Proposal (above)].
 
 
[Commission agreed with all major online hosting providers—including Facebook, Twitter, YouTube and Microsoft—on a code of conduct that includes a series of commitments to combat the spread of illegal hate speech online in Europe].
 
European Commission, Communication, Online Platforms and the Digital Single Market: Opportunities and Challenges for Europe, COM(2016) 288 Final, May 25, 2016
 
[The Communication apparently endorses the plan of maintaining the existing intermediary liability regime.  However, the Commission stresses that “a number of specific issues relating to illegal and harmful content and activities online have been identified that need to be addressed.” In this regard, the Commission would launch a “sectorial legislation […] and problem-driven approach.”  Apparently, this sectorial action will target copyright-protected content, minors’ protection from harmful content, and incitement through hatred.  This should happen through a mix of legislative interventions—by updating the audiovisual and copyright regulations—and promotion of voluntary self-regulatory actions.  The Communication puts forward the idea that “the responsibility of online platforms is a key and cross-cutting issue.”]
 
European Commission, Communication, Towards a Modern, more European Copyright Framework, COM(2015) 626 final, December 9, 2015
 
[The Commission anticipated that policy and legislative action would be taken in respect of: (1) exceptions and limitations; (2) exclusive rights, including both clarifying issues facing linking and considering whether any action specific to news aggregators is needed; and (3) enforcement, including Follow the Money strategies, commercial-scale infringements, application of provisional and precautionary measures, and injunctions and their cross-border effect. In connection with this Communication and the Digital Single Market Strategy (below), the Commission launched a Public Consultation on the Regulatory Environment for Platforms, Online Intermediaries, Data and Cloud Computing and the Collaborative Economy and will issue a report shortly.]
 
European Commission, Communication, A Digital Single Market Strategy for Europe, COM(2015) 192 final, May 6, 2015
 
[The Strategy plans the introduction of enhanced obligations that websites and other Internet intermediaries should have for dealing with unlawful third-party content and discusses what regulations should apply to a subset of those intermediaries deemed “internet platforms.” The Commission would like to discuss whether "whether to require intermediaries to exercise greater responsibility and due diligence in the way they manage their networks and systems – a duty of care."  (emphasis added). The Commission refers to enhanced responsibilities for dealing with illegal content, such as child pornography, terrorist materials, and content that infringes upon intellectual property rights. (See § 3.3)]
 
European Commission, Staff Working Document, E-commerce Action Plan 2012-2015. State of Play 2013,  SWD(2013) 153 final, April 23, 2013
 
[The Commission specifically prioritizes tackling excessive fragmentation of notice-and-take-down (or "notice-and-action") procedures in European jurisdictions (3.4, main action 12). This fragmentation in turn leads to a high level of legal uncertainty that makes Europe an uneasy business environment for intermediaries.]
 
 
 
European Commission, Communication, A Coherent Framework for Building Trust in the Digital Single Market for e-Commerce and Online Services, COM(2011) 942 final, February 6, 2012
 
[mentioning that it appears necessary to set up a horizontal European framework for notice-and-action procedures and announcing an initiative on notice-and-action procedures (Main Action 12).]
 
 
[This European Protocol signed between major rights-holders and internet platforms on the online sale of counterfeit products requires, in addition to a notification and take-down procedure, action against repeat infringements as well as proactive and preventive measures.]
 

DECISIONS

European Court of Justice, GS Media BV v Sanoma Media Netherlands BV and Others, Case C-160/15, September 8, 2016
[Netherlands, copyright, infrigement, hosting providers, pictures, linking, unauthorized]
 
[(1) In GS Media, the ECJ had to decide whether a link to materials that the copyright holder didn’t authorize were infringing communication to the public. In this case, the defendant is a popular Dutch blog that posted links to photos meant for publication in the Dutch version of Playboy magazine, but which were leaked on an Australian server by an unknown uploader. Sonoma noticed GS Media of the infringing nature of the linked material—asking for removal of the link multiple times.
 
(2) In finding GS Media liable for copyright infringement, the Court noted however that the alleged infringer can only be held responsible for the infringing act if he had sufficient knowledge of the unauthorized publication of the linked work.
 
(3) Also, the court established a rebuttable presumption of knowledge in cases of links made for profit purposes by noting that “furthermore, when the posting of hyperlinks is carried out for profit, it can be expected that the person who posted such a link carries out the necessary checks to ensure that the work concerned is not illegally published on the website to which those hyperlinks lead, so that it must be presumed that that posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder. In such circumstances, and in so far as that rebuttable presumption is not rebutted, the act of posting a hyperlink to a work which was illegally placed on the internet constitutes a ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29."]
 
European Court of Justice, Tobias Mc Fadden v Sony Music Entertainment Germany GmbH, Case C-484/14, September 15, 2016
[Germany, copyright, infrigement, access provider, wireless LAN, unsecured, music]
 
[(1) The ECJ had to consider the potential liability of Mr. Mc Fadden--running a business selling lighting and sound systems--for the use by a third party of the wireless local area network (WLAN) operated by Mc Fadden in order to make a phonogram produced by Sony Music available to the general public without authorisation. Mc Fadden operated his wireless LAN with anonymous access and free of charge in the vicinity of his business. Access was intentionally not protected in order to draw the attention of customers of near-by shops, of passers-by and of neighbours to his company. The referring court wanted to know whether the access provider exemption from liability might preclude from finding Mc Fadden liable, either directly or secondary.
 
(2) Against this factual background, the ECJ concluded that 

(a) making a network available to the general public free of charge constitutes an ‘information society service’ within the meaning of Article 12(1) of Directive 2000/31 where the activity is performed by the wiress LAN operator for the purposes of advertising the goods sold or services supplied by that service provider;

(b) open wireless operators are ‘mere conduits’ in the sense of Art 12 of Directive 2000/31; 

(c) the scope of exempted ‘liability’ under Art. 12(1) does not extend to precluding a rightholder from claiming injunctive relief against the continuation of the infringement and the payment of pre-trial and litigation costs from the wireless LAN operator where such claims are made for preventing the LAN operator from allowing the infringement to continue;

(d) the scope the access provider exemption in 12(1)--as limited by the carve-outs for injunctions permitted by Art 12(3)--does not preclude injunctions requiring a free-access wireless LAN operator to prevent third parties from making a copyright-protected work available from an online (peer-to-peer) exchange platform via an internet connection; 

(e) the wireless LAN operator may choose which technical measures to take in order to comply with the injunction, however the injuntion will not be precluded even if such a choice is limited to a single measure consisting in password-protecting the internet connection, provided that those users are required to reveal their identity in order to obtain the required password and may not therefore act anonymously.

    European Court of Justice, Schrems v. Data Protection Commissioner, C-362/14, October 6, 2015
    [Ireland, privacy, safe harbor, hosting provider, access provider, Facebook]
     
    [(1) Maximillian Schrems, an Austrian citizen and Facebook user, lodged a complaint with the Irish Data Protection Commissioner saying that in light of Edward Snowden's revelations concerning the activities of the United States intelligence services, the law and practice of the United States did not offer adequate protection against surveillance by public authorities of the data transferred to that country. In this case, data provided to Facebook’s Irish subsidiary is transferred to servers located in the United States.
     
    (2) The Court found that European data was not sufficiently protected in the United States and invalidated the Commission Decision 2000/520/EC that created the transatlantic U.S.-EU Safe Harbor agreement. The EU-US Safe Harbor agreement had been in place for 15 years and enabled U.S. companies to transfer data from Europe to the United States merely by self-certifying that they would comply with EU data protection standards. The Court held that even if the U.S. companies involved were taking adequate protection measures, U.S. public authorities are not subject to the Safe Harbor guidelines and therefore European citizens’ data and privacy was at risk to U.S. government surveillance.] [see also Global FoE]
     
    European Court of Justice, C More Entertainment AB v Linus Sandberg, C‑279/13, March 26, 2015
    [Sweden, copyright, broadcasting right, hosting providers, linking, live streaming, sport event]
     
    [(1) The ECJ had to decide whether linking to live internet streams of sport events infringed on the exclusive related rights of broadcasting organizations. Prior to this case, the Court decided linking related issues in Svensson and Bestwater (see below). The request for a preliminary ruling came from the Supreme Court of Sweden. The online broadcaster C More Entertainment challenged the legality of Mr. Sandberg’s website hosting links enabling users to circumvent a paywall to watch its live streams of hockey matches. The ECJ concluded that national legislation may extend the exclusive right of the broadcasting organisations to acts of communication to the public encompassing broadcasts of sporting fixtures made live on internet.
     
    (2) The referring court decided to drop a number of questions concerning whether placing clickable links on a website may be classified as an act of communication to the public. The ECJ already answered those questions in Svensson, noting that links communicate works to the public, but they are not infringing unless they make the work available to a new public. Therefore, links to authorized works freely available online do not infringe the right of communication to the public. In contrast, a link enabling users to circumvent a paywall would communicate the work to a new public and would be infringing.
     
    (3) In this case, however, C More Entertainment does not own a copyright in the underlying sport event, which, as discussed here, does not reach the level of originality required for copyright protection. Instead, C More Entertainment enjoys a related right in the broadcasting of the sport event. According to Article 3(2)(d) of Directive 2001/29, Member States must provide broadcasting organisations with  “the exclusive right to authorise or prohibit the making available” of fixations of their broadcasts to the public, “in such a way that members of the public may access them from a place and at a time individually chosen by them.” According to the ECJ, this "right of making available to the public" forms part of the wider "right of communication to the public," which Article 3(1) grants to authors. The ECJ confirmed that “making available to the public” is intended to refer to ‘interactive on-demand transmissions’ characterized by the fact that members of the public may access them from a place and at a time individually chosen by them. As the ECJ noted, “that is not the case of transmissions broadcast live on internet.” C More Entertainment’s live streams of hockey matches would fall out of the scope of the rights granted by EU law to broadcasting organizations.
     
    (4) Against this factual and legal background, the Swedish Supreme Court maintained only one question for the ECJ: May the Member States give wider protection to the exclusive right of authors by enabling “communication to the public” to cover a greater range of acts than provided for in Article 3(2) of [Directive 2001/29]? In practice, should Article 3(2) of Directive 2001/29 be interpreted as precluding national legislation from extending the exclusive right of the broadcasting organisations to acts of communication to the public encompassing broadcasts of sporting fixtures made live on internet? Does EU law preclude Member States to extend the exclusive rights of the broadcasters to those acts which could be classified as "acts of communication to the public" but which do not constitute "acts of making available to the public the fixations of their broadcasts in such a way that members of the public may access them from a place and at a time individually chosen by them"?
     
    (5) The ECJ answered to this question in the negative and held that “Directive 2006/115 [on Rental Right and Lending Right and on Certain Rights related to Copyright in the Field of Intellectual Property] gives the Member States the option of providing for more protective provisions with regard to the broadcasting and communication to the public of transmissions made by broadcasting organisations than those which must be instituted in accordance with Article 8(3) of that directive.” Therefore, the ECJ concluded, Article 3(2) of Directive 2001/29 must be interpreted as not precluding national legislation from extending the exclusive broadcasting organisations' right of making available to the public referred to in Article 3(2)(d) to acts of communication to the public including live internet streams of sport events.] [See also CIS blog]
     
    European Court of JusticeBestWater International GmbH v Michael Mebes and Stefan Potsch, C348/13, October 21, 2014
    [Germany, copyright, infrigement, hosting providers, videos, framing, embedding]
     
    [(1) The Court issued a reasoned order ex Article 99 of the Rule of Procedure of the European Court of Justice, which  applied the findings of the Svensson decision (see below).
     
    (2) The case concerned the lawfullness under EU law of the practice of inserting on websites clickable links that use the technique of "framing" and through which the user was directed to a film on which BestWater maintained the exclusive rights. BestWater manufactures and markets water filter systems. For advertising needs, she produced a short film on the water pollution. The film was available on the video platform "YouTube" without Bestwater's consent. Mebes and Potsch are independent sales agents who act on behalf of a competitor of BestWater International. They each have a website where they promote the products marketed by their client. During the summer of 2010, Mebes and Potsch allowed the visitors to their websites to view BestWater's film through a web link using the technique of "framing," giving the impression that it was shown on thier websites.
     
    (3) The mere fact that a copyrighted work, freely available on a web site, is inserted on another website through a link using the technique of "framing" can not be described as "communication to the public" under EU law, to the extent that the work in question is not transmitted to a new public or disclosed following a specific technical mode, different from the original communication.]
     
    European Court of Justice, Sotiris Papasavvas v O Fileleftheros Dimosia Etaireia Ltd and Others, C-291/13, September 11, 2014
    [Greece, intermediaries, notion, limitation of civil liability]
     
    [The ECJ clarified the notion of  "information society services" within the meaning of the Directive 2000/31/EC and the application of rules of civil liability for defamation to those intermediaries. The case involved an action brought by an individual for defamation against a daily national newspaper, which published the defamatory articles online. The ECJ concluded that 
     
    (1) Directive 2000/31/EC must be interpreted as meaning that the concept of ‘information society services’ covers the provision of online information services for which the service provider is remunerated, not by the recipient, but by income generated by advertisements posted on a website;
     
    (2) Directive 2000/31/EC does not preclude the application of rules of civil liability for defamation. In particular, the limitations of civil liability specified in Articles 12 to 14 of Directive 2000/31 
     
    (a) do not apply to the case of a online version of a newspaper published by a company which is remunerated by income generated by commercial advertisements posted on that website, since that company has knowledge of the information posted and exercises control over that information, whether or not access to that website is free of charge; and
     
    (b) are capable of applying in the context of proceedings between individuals relating to civil liability for defamation and information society service providers cannot oppose the bringing of legal proceedings for civil liability against them and, consequently, the adoption of a prohibitory injunction by a national court; 
     
    (c) however, the limitations of liability provided for in those articles may be invoked by the provider in accordance with the provisions of national law transposing them or, failing that, for the purpose of an interpretation of that law in conformity with the directive. By contrast, Directive 2000/31 cannot, in itself, create obligations on the part of individuals and therefore cannot be relied on against those individuals.]
     
    European Court of Justice, Technische Universität Darmstadt v Eugen Ulmer KG, C 117/13, September 11, 2014
    [Germany, copyright, digitital libraries, digitization, reproduction, exception, limitations]
     
    [The ECJ stated that European libraries may digitize books in their collection without permission from the rightholders. The decision confirmed a previous opinion of the ECJ's Advocate General.
     
    (1) The ECJ noted that European law "must be interpreted to mean that it does not preclude Member States from granting to publicly accessible libraries [. . . ] the right to digitise the works contained in their collections . . . ." However, several caveats attach to this general statement. First, such act of reproduction must be necessary for the purpose of making those works available to users, by means of dedicated terminals, in public libraries, for the purpose of research or private study. (par. 46). Second, the ECJ recognizes this right provided that "specific acts of reproduction" are involved. Therefore, the public library may not digitize their entire collections. (par. 44-45). Third, "the number of copies of each work made available to users by dedicated terminals [cannot be] greater than that which those libraries have acquired in analogue format." (par. 48). Finally, "although [ . . . ] the digitisation of the work is not, as such, coupled with an obligation to provide compensation, the subsequent making available of that work in digital format, on dedicated terminals, gives rise to a duty to make payment of adequate remuneration." (par. 48).
     
    (2) Also, as the ECJ clarified, this right does not extend to acts such as the printing out of works on paper or their storage on a USB stick, carried out by users from dedicated terminals. However, such acts may be authorised under national legislation transposing the exceptions or limitations included in Article 5(2)(a) or (b) of the Directive 2001/29/EC.] [See also CIS blog post].
     
    [privacy, personal data, search engine, google, right to be forgotten, takedown]
     
    [(1) ruling that "an internet search engine operator is responsible for the processing that it carries out of personal data which appear on web pages published by third parties.” Thus, under certain circumstances, search engines can be asked to remove links to webpages containing personal data. (see also CIS bolg post)
     
    (2) On November 26, 2014, the Article 29 Data Protection Working Party issued the Guidelines on the Implementation of the CJEU Judgment on Google Spain v. Costeja, 14/EN WP 225, which are summarized in this CIS blog post.] 
     
    [copyright, infringment, access providers, blocking orders, legitimacy]
     
    [The ECJ stated that EU law must be interpreted as not precluding a court injunction that does not specify the measures which an access provider must take to block access to a website making available copyrighted material without the rightsholders’ permission. Additionally, the ECJ concludes that blocking orders can be imposed on access providers when they can avoid incurring coercive penalties for breach of that injunction by showing that they have taken all reasonable measures. According to the ECJ, measures are deemed “reasonable” provided that (i) they do not unnecessarily deprive internet users of the possibility of lawfully accessing the information available and (ii) they have the effect of preventing unauthorized access to copyrighted materials or, at least, of seriously discouraging internet users from accessing infringing materials. The ECJ disregarded a previous opinion of the Advocate General, which came down to opposite conclusions.]
     
    European Court of Justice, Nils Svensson et al v Retriever Sverige AB, C-466/12, February 13, 2014
    [copyright, infrigement, hosting providers, news articles, linking]
     
    [The ECJ decided that links to authorized works freely available online do not infringe the E.U.-recognized exclusive right of communication to the public. The case involved journalists claiming that the website Retriever Sverige had improperly linked to news articles they had authored, thereby making those articles available to the public without permission, in violation of copyright law.
     
    (1) For the first time, the ECJ announced a rule that links communicate works to the public, which is a copyright owner’s sole prerogative under EU law. However, the court said that those links are not infringing and do not need additional authorization from the copyright owner unless they make the work available to a new public (par. 25-28). A new public must include people other than those who can access the work thanks to the rightsholders’ conduct. In other words, if the rightsholder publishes the work online, anyone can link to it without further permission. 
     
    (2) Next, the ECJ decided that for copyright purposes, there is no difference between a link which takes the user to another website where the work (presumably) is lawfully displayed and one which embeds the work, giving the impression that it is appearing on the linking website. Because only a link that communicates the work to a “new public” infringes the copyright holders’ exclusive right (par. 30), copyright law does not offer any redress for this practice. However, the ECJ does not exclude the possibility that courts may still sanction this practice under some circumstances as a form of unfair competition. 
     
    (3) Finally, the ECJ decided that Member States are not entitled to give wider protection to authors by defining “communication to the public” more broadly than is done in the InfoSoc Directive (par. 33-41).] [See also CIS blog.]
     
    European Court of Justice, ITV Broadcasting Ltd and others v TVCatchup Ltd, C-607/2011, March 7, 2013
    [copyright, streaming, television programs, communication to the public, liability]
     
    [(1) The ECJ was asked to decide whether sites that link to streams are responsible for communicating copyrighted works to the public. In this case, the defendant operated a website based on free, unauthorised live streaming of television programmes, including those protected by the claimant’s copyright.
     
    (2) The ECJ confirmed that any retransmission of a terrestrial television broadcast over the Internet constitutes a communication to the public. In particular, the concept of ‘communication to the public’ covers a retransmission of the works included in a terrestrial television broadcast (a) where the retransmission is made by an organisation other than the original broadcaster, (b) by means of an internet stream made available to the subscribers of that other organisation who may receive that retransmission by logging on to its server, (c) even though those subscribers are within the area of reception of that terrestrial television broadcast and may lawfully receive the broadcast on a television receiver. Also, the ECJ noted that it is irrelevant whether the retrasmission (i) is funded by advertizing and is therfore of a profit-making nature or (ii) is made by an organization which is acting in direct competition with the original broadcaster.
     
    European Court of Justice, Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM) v. Netlog NV, C-360/10, February 16, 2012
    [copyright, infringment, hosting provider, social network, linking, filtering, monitoring]
     
    [The ECJ had to decide whether a Belgian court could require Netlog, the Belgian equivalent to Facebook, to immediately cease making available works from SABAM‘s repertoire by installing a filtering system, which would oblige Netlog to actively monitor all the data of its users and to prevent future IPR-infringements. The ECJ decided that European law must be interpreted as precluding a national court from issuing an injunction against a hosting service provider which requires it to install a system for filtering: (1) information which is stored on its servers by its service users; (2) which applies indiscriminately to all of those users; (3) as a preventative measure; (4) exclusively at its expense; and (5) for an unlimited period, (6) which is capable of identifying electronic files containing musical, cinematographic or audio-visual work in respect of which the applicant for the injunction claims to hold intellectual property rights, with a view to preventing those works from being made available to the public in breach of copyright.] [See also Global FoE]
     
    [copyright, infringment, access provider, file sharing, p2p, filtering, monitoring]
     
    [(1) The ECJ had to decide whether a Belgian collective rights managment organization (SABAM) could require an internet service provider, namely Scarlet and Tiscali, to install a filtering system with a view to preventing the illegal downloading of files.
     
    (2) The ECJ ruled that EU law must must be interpreted as precluding an injunction made against an internet service provider which requires it to install a system for filtering (i) all electronic communications passing via its services, in particular those involving the use of peer-to-peer software; (ii) which applies indiscriminately to all its customers; (iii) as a preventive measure; (iv) exclusively at its expense; and (v) for an unlimited period, (vi) which is capable of identifying on that provider’s network the movement of electronic files containing a musical, cinematographic or audio-visual work in respect of which the applicant claims to hold intellectual-property rights, with a view to blocking the transfer of files the sharing of which infringes copyright.
     
    (3) An obligation to implement such filtering system, according to the ECJ, would seriously endanger “the freedom to conduct business enjoyed by operators such as ISPs”, also possibly infringing “the fundamental rights of that ISP’s customers, namely their right to protection of their personal data and their freedom to receive or impart information.”] [See also Global FoE]
     
    European Court of Justice, L’Oréal SA and Others v. eBay International AG and Others, C-324/09, July 12, 2011
    [trademark, infringment, hosting provider, keywords]
     
    [Considering the use of keywords as a trigger for contributory liability of an hosting provider that operates an online marketplace. The ECJ found that an hosting provider cannot benefit from the E-Commerce Directive safe harbours
     
    (1) if it has played an active role in relation to the sale activities of the direct infringer, or
     
    (2) if it has constructive knowledge of unlawful sales carried out throughout its services.
     
    (3) The Court clarified that "awareness" of illegal content can in particular be obtained by a notice that is "sufficiently detailed and adequately substantiated". A hosting service provider may thus have to act (by removing or disabling access to content) following the receipt of a notice. A notice may concern any type of illegal content.
     
    (4) The ECJ interpreted Article 11 of the Enforcement Directive as meaning that an ISP may be ordered “to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind.”] [see also Global FoE].
     
    European Court of Justice, Google France SARL and Google Inc. v. Louis Vuitton Malletier SA, C-236/08,  Google France SARL v. Viaticum SA and Luteciel SARL (C-237/08) and Google France SARL v. Centre national de recherche en relations humaines (CNRRH) SARL and Others, C-238/08, joined cases, March 23, 2010
    [France, trademark, hosting provider, online advertising, auctioning, keywords]
     
    [Considering the contributory liability for trademark infringement of an hosting provider auctioning words corresponding to the plantiffs' trademarks while operating an online advertising service. The ECJ found that the provider does not infringe trademark law by allowing advertisers to purchase potentially infringing keyworks trough their services. In particular, (1) a provider, which (a) stores, as a keyword, a sign identical to a trademark and (b) organizes the display of advertisements on the basis of that keyword does not use the sign within the meaning of trademark law. (2) Additionally, the safe harbors provided by Directive 2000/31/EC apply if the service provider (a) has not played an active role that gives it knowledge of, or control over, the data stored or (b) having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned. If (a) and (b) do not apply, that service provider cannot be held liable for the data which it has stored at the request of an advertiser.]
     
    European Court of Justice, LSG v. Tele2, C-557/07, February 19, 2009
    [Austria, privacy, copyright, access providers, ISPs, right of Information, IP numbers, disclosure]
     
    [Performing rights organization LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten ("LSG") asked Tele2 to disclose users’ temporary IP addresses as personal traffic data, for the purpose of civil proceedings for alleged infringements of their exclusive copyrights. The ECJ relied its reasoning heavily on the Promusicae case and stated that: (1) Access providers which merely provide users with Internet access, without offering other services or exercising any control over the services provided to users, must be regarded as intermediaries under Article 8(3) of Directive 2001/29; (2) under the principle of proportionality, ISPs’ duty of disclosure gives way to users’ privacy rights in this case, where temporary IP addresses must not be stored for the purpose of civil litigations in copyright infringement cases.]
     
    European Court of Justice, Productores de Música de España (Promusicae) v Telefónica de España SAU,  Case C-275/06, July 16, 2009
    [Spain, privacy, copyright, access providers, ISPs, right of Information, IP numbers, disclosure]
     
    [Promusicae sought an order from a commercial court in Spain to force Telefónica, a Spanish ISP, to divulge identities corresponding to IP addresses that Promusicae had collected in its own investigations of illegal file sharing. The Spanish court granted Promusicae’s request. Telefónica appealed to the ECJ in regards the interpretations of the Community Law, Articles 15(2) and 18 of Directive 2000/31, Article 8(1) and (2) of Directive 2001/29, Article 8 of Directive 2004/48 and Articles 17(2) and 47 of the Charter on the limits of ISPs’ responsibilities to assist in criminal investigation versus civil proceedings. Balancing ISP customers’ privacy with content industry’s ability to protect its intellectual property, theECJ held that European law alone does not require ISPs to disclose their subscribers’ identities to trade organizations for the purpose of civil litigation against the subscribers in order to ensure effective protection of copyright.] [See also Global FoE]

    OTHER RESOURCES

    Christina Angelopolous, Beyond the Safe Harbours: Harmonizing Substative Intermediary Liability for Copyright Infringment in Europe (Amsterdam Law School Research Paper No. 2013-72, 2013)
    European Commission, Digital Agenda for Europe, https://ec.europa.eu/digital-agenda
    European Commission, The EU Single Market, Online Services, http://ec.europa.eu/internal_market/e-commerce/index_en.htm

    CONTRIBUTORS

    Giancarlo F. Frosio
    Email address: gcfrosio at law.stanford.edu

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